Ex Parte Zschau et al

Patent Trial and Appeal Board

Mar 12, 2018

12439271 (P.T.A.B. Mar. 12, 2018)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/439,271 10/30/2009 Enrico Zschau 357123.00027 2655
78905 7590 03/14/2018
Saul Ewing Arnstein & Lehr LLP (Philadelphia)
Attn: Patent Docket Clerk
Centre Square West
1500 Market Street, 38th Floor
Philadelphia, PA 19102-2186
EXAMINER
CHANG, AUDREY Y
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
03/14/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents@saul.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ENRICO ZSCHAU, ARMIN SCHWERDTNER and
BO KROLL
Appeal 2017-003405
Application 12/439,271
Technology Center 2800
Before BRADLEY R. GARRIS, KAREN M. HASTINGS, and MICHELLE
N. ANKENBRAND, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants timely request a rehearing of our Decision mailed
December 27, 2017 sustaining the Examiner’s § 103 rejection of the
appealed claims as unpatentable over Cameron (Dec. 3—5).1
1 The subject Request does not address the portion of our Decision
sustaining the Examiner’s rejections of the appealed claims on the ground of
nonstatutory obviousness-type double patenting (Dec. 3).
Appeal 2017-003405
Application 12/439,271
In their Request for Rehearing, Appellants argue that “the Board
misapprehended Figures 6a and 6b of the Cameron reference . . . because the
Examiner [on page 6 of the Answer] introduced into the record an altered
representation of Figure 6b of Cameron . . . without identifying the fact that
the submitted marked-up version was not a true representation of Figure[] 6b
of Cameron, introducing conjecture and errors of fact into her application of
Cameron to the claimed invention” (Reh’g. Req. 1). Appellants state that
they “previously addressed these issues on Page 3 of its Reply Brief filed on
January 3, 2017, in the first four bullet points on that page” (id.).
Our Decision explicitly responds to the Reply Brief request that we
strike from the record many aspects of the Examiner’s Answer including the
marked-up version of Figure 6b (Dec. 4 n. 5). For this reason, the record
reflects a lack of support for Appellants’ belief that we misapprehended the
Examiner’s marked-up version as a true representation of Cameron’s Figure
6b.
In the Decision, we acknowledged Appellants’ argument that
Cameron does not teach the claim 1 feature “where position and size of a
sub-hologram depend on the position of the visibility region and on the
position of one of the object points of the scene” (Dec. 4). However, we
found this argument deficient because it did not address “with any
meaningful specificity the Examiner’s rationale that Appellants’ method as
depicted in Figure la and Cameron’s method as depicted in Figure 6b both
involve the same scientific principle,” whereby both methods would include
the claim feature in question (id.). Appellants respond by submitting that
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Appeal 2017-003405
Application 12/439,271
they “did in fact address with meaningful specificity the Examiner’s
rationale . . . beginning on page 15 of its Appeal Brief’ (Reh’g. Req. 3).
However, Appellants fail to identify any specific argument in their
Appeal Brief that they believe addresses with explicative particularity the
Examiner’s rationale. Therefore, we continue to regard the Appeal and
Reply Briefs as lacking a meaningful exposition of this rationale showing it
to be erroneous. Moreover, we emphasize that Appellants’ Request does not
address, and therefore does not show error in, the example our Decision
presents as supporting the Examiner’s rationale (Dec. 5).
Finally, Appellants “assert[] that inherency is, in fact, being relied on
to support the pending obviousness rejection[]” (Reh’g. Req. 6) and argue
that such reliance is improper because “[a]n inherent feature may be relied
upon to establish obviousness only if the inherency would have been
obvious to one of ordinary skill in the art” (id. at 7 quoting Chisum on
Patents § 5.03[3][a] (2015)).
To the extent the Examiner relies on principles of inherency in the
§103 rejection, it is not for supporting a conclusion of obviousness, but
rather, it is for supporting the Examiner’s finding of fact that the method of
Cameron’s Figure 6b necessarily includes the previously discussed feature
of claim 1. Such reliance on inherency in a § 103 rejection is proper. See
Par Pharm., Inc. v. TWi Pharm., Inc., 773 F.3d 1186, 1195—96 (Fed. Cir.
2014) (“[I]n order to rely on inherency to establish the existence of a claim
limitation in the prior art in an obviousness analysis—the limitation at issue
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Appeal 2017-003405
Application 12/439,271
necessarily must be present, or the natural result of the combination of
elements explicitly disclosed by the prior art.”).
Appellants’ Request for Rehearing is denied.
REHEARING DENIED
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